Appeal No. 2000-0084 Page 5
Application No. 08/619,672
The Rejections Under 35 U.S.C. § 103
The test for obviousness is what the combined teachings of the prior art would have
suggested to one of ordinary skill in the art. See, for example, In re Keller, 642 F.2d 413,
425, 208 USPQ 871, 881 (CCPA 1981). In establishing a prima facie case of
obviousness, it is incumbent upon the examiner to provide a reason why one of ordinary
skill in the art would have been led to modify a prior art reference or to combine reference
teachings to arrive at the claimed invention. See Ex parte Clapp, 227 USPQ 972, 973
(Bd. Pat. App. & Int. 1985). To this end, the requisite motivation must stem from some
teaching, suggestion or inference in the prior art as a whole or from the knowledge
generally available to one of ordinary skill in the art and not from the appellant's disclosure.
See, for example, Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1052, 5 USPQ2d
1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
The first of the rejections under this section of the statute is that claims 15, 16 and
18 are unpatentable over Ariel and Schleicher. As we concluded above, Ariel does not
establish that it was known in the art at the time of the appellants’ invention to provide a
substantially rounded transition section having a radius between the rivet head and the
stem. Moreover, we fail to perceive any teaching, suggestion or incentive in Ariel which
would have led one of ordinary skill in the art to provide the rivet disclosed therein with such
a construction. Nor do we find such in Schleicher, which
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